By Dugie Standeford for Intellectual Property Watch
Far from being a bizarre by-product of the online society created by Second Life, a recently launched US intellectual property (IP) infringement case against one of its “avatars” is very much grounded in the real world, legal experts say. However, the fact that the first-of-its-kind case involves a “virtual” product raises interesting legal and social questions, they say.

The complaint [.pdf] was filed on 3 July in the Tampa Division of the US District Court for the Middle District of Florida by Eros, LLC. The company markets adult-themed virtual objects, including the “SexGen Platinum Base Unit v4.01″ and the “SexGen Platinum+Diamond Base v5.01,” digital beds with animated sex positions. The lawsuit claims that “John Doe, also known as Volkov Catteneo, also known as Aaron Long” has been making and selling unauthorised copies of the beds in violation of US trademark and copyright laws.

Second Life [Wikipedia] is a three-dimensional, online, virtual world imagined, created and owned by residents whose personas are represented by avatars, according to its creator, Linden Lab.

The beds are sold on a “no copy” basis, meaning that while Second Lifers may transfer items purchased from Eros to other residents, they cannot copy them, according to the complaint. Eros claims copyrights in the beds and in June applied for US federal copyright and trademark registrations.

Eros’ immediate problem was establishing Catteneo’s true identity in order to bring him into court. Its attorney, Francis Taney of Buchanan, Ingersoll & Rooney, subpoenaed Second Life creator Linden Lab and Paypal, the online payment service through which Second Life residents make purchases, for information about the avatar’s identity. Both received their subpoenas on 6 July and have until 20 July to respond, Taney said.

In a Second Life interview with Reuters, Catteneo said he does not fear the subpoenas because “I’m not some kind of noob” (referring to a newcomer to a website or online game). Linden does not have his real name and he does not have a permanent address in real life, the avatar told Reuters.

Setting legal precedent?

The lawsuit has interesting aspects but is essentially a straightforward infringement matter, said Mitchell Stabbe, an attorney in DowLohnes’ Washington, DC office.

Eros claims a trademark on a virtual sex bed, Stabbe said. Its trademark application describes a product for which there is a market, which just happens to be in Second Life. The question is whether an avatar who purchases the bed from Catteneo is likely to believe it comes from Eros, he said. If so, there is infringement. On the copyright side, Catteneo is alleged to have copied the image of the bed. Here, the question is whether that image is sufficiently original to qualify for copyright protection, Stabbe said.

In copyright, “the distinction between ‘virtual’ or ‘real’ works is absolutely meaningless,” said Andrea Glorioso, an Italian IP and technology researcher and consultant. The Berne Convention, an international treaty for the protection of literary and artistic works, includes among its protected subject matter “every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression.”

Glorioso said he would “find it difficult to believe” that the beds would not fall under copyright protection given how broad the definition of protected subject matter is around the world. The real issue, whether an infringement has occurred, is a matter for judicial determination, he said.

“I share the view that this is relatively straightforward and will not require evidence or theories beyond that which is typical,” Taney told Intellectual Property Watch. However, he said he will “reserve judgment until the case progresses further.”

Had Eros been European, it would not have made any difference to the case, said Cedric Manara, associate law professor at the EDHEC Business School in France. The United Kingdom’s copyright system is similar to that of the United States, and in continental countries a work is protected when it is deemed original. Given its shape and design, most courts would view the sex bed as original and grant protection, Manara said.

Under European Union law, moreover, any unauthorised use of a registered trademark in the course of trade is infringement, Manara said. However, because Second Life is a global universe, a trademark owner would have to prove that its mark has been used in those territories where it is registered. If Eros had a Community Trade Mark and discovered that it was being infringed by a Japanese user targeting clients in Japan only, it cold not claim infringement because its property rights would be limited to the EU, he said.

The most likely event in a case like this would not normally be a lawsuit, Manara said. Instead, the copyright owner would notify Linden that it is hosting illegal content and Linden would take the material down. Eros’ suit could be for publicity purposes or to warn Second Life users that it will vigorously fight all sales of products identical to its own, he said.

The subpoenas issued to Linden and PayPal are very real. As hosting provider, Linden is required to provide information on who is “behind” the avatars, said Winston Maxwell, an attorney in the Paris office of Hogan & Hartson who represents Second Life, though not in the Florida matter. “Linden Lab cooperates with authorities and courts when presented with such demands,” he said.

Taney would not say what action he might take if Catteneo’s identity cannot be determined, only that he would “assess our procedural options.”

Socially speaking, said Glorioso, this and similar cases raise the problem that in Second Life, “everything is potentially copyrighted.” This “transforms a law that was meant to regulate a very specific subset of social life into a sort of constitutional-level norm,” he added.

Dugie Standeford may be reached at info@ip-watch.ch.